Ex parte NILSSEN - Page 5

          Appeal No. 95-3616                                         Page 5           
          Application 07/839,065                                                      
          B.   Claims 62-64 and 66-73 are unpatentable for obviousness                
               2.   Appellant has argued all claims  but claim 64 as one4                                  
          group.  (Paper at 2.)  All of the claims in the group require a             
          resistor, a resistive path, or resistance means associated with             
          the lamp circuit assembly except claim 69, which requires a                 
          capacitor associated with the lamp circuit assembly.  The                   
          difference is not important since the examiner's rationale                  
          requires a resistor in parallel with a capacitor.  (Paper 54                
          at 7.)  Genuit's lamp circuit contains neither a resistor nor a             
          capacitor, so it is not clear why a person having ordinary skill            
          in the art would have been motivated to add a capacitor or                  
          resistor, respectively, to the lamp circuit.  Appellant correctly           
          notes (Paper 53 at 4) that simply because standard circuit                  
          components could have been added does not mean that it would have           
          been obvious to do so.  In re Gordon, 733 F.2d 900, 902, 221 USPQ           
          1125, 1127 (Fed. Cir. 1984).                                                
               3.   Claim 64 depends from claim 62 and the examiner has               
          rejected both over the same reference.  Since we reverse the                

               4    Appellant neither includes claim 63 as part of the                
          group nor argues it separately.  Since we have affirmed a                   
          section 112 rejection against claim 63, for simplicity's sake we            
          will assume Appellant intended claim 63 to stand or fall with its           
          parent, claim 62, for the purposes of the obviousness                       
          determination.  Nevertheless, Appellant and the examiner should             
          take care to ensure that the argued groups account for all                  
          rejected claims.  Otherwise, we may conclude that Appellant did             
          not intend to appeal any claims not argued.                                 

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